Secondary Meaning

Secondary Meaning

A doctrine of trademark law that provides that protection is afforded to the user of an otherwise unprotectable mark when the mark, through advertising or other exposure, has come to signify that an item is produced or sponsored by that user.

Under trademark law a mark associated with a marketed product generally cannot receive full trademark protection unless it is distinctive. Trademark protection gives the holder of a mark the exclusive right to use that mark in connection with a product.

Full trademark protection is given when the U.S. Patent and Trademark Office places the mark on the principal register of trademarks. Suggestive, Arbitrary, and fanciful marks distinguish a product from other products, so they automatically qualify for the principal register. Descriptive and generic marks ordinarily do not qualify for the principal register. A person may not, for example, claim the right to the word "fine" in connection with a product because the word is merely descriptive. A descriptive or generic mark may, however, be placed on the supplemental register, which gives the holder of the mark a certain measure of trademark protection. If the mark acquires a secondary meaning after five years of continuous, exclusive use on the market, the mark may be placed on the principal register (15 U.S.C.A. § 1052(f)).

A descriptive or generic mark attains a secondary meaning if the producer so effectively markets the product with the mark that consumers come to immediately associate the mark with only that producer of that particular kind of goods. To illustrate, assume that an apple grower markets red apples under the term "Acme." Because the term is generic, it would not qualify for full trademark protection at first. If, however, customers immediately recognize Acme apples as the apples produced by that grower, after five years the producer may prevent all others from using the mark "Acme" in connection with red apples.

Under 15 U.S.C.A. § 1052(a)–(d), (f), immoral or scandalous marks, national symbols, and names of living figures cannot acquire trademark protection, even through secondary meaning. Surnames generally are not given trademark protection, but a surname may qualify for protection if it acquires a secondary meaning (Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145, 1955 WL 6450 [Com'r 1955]).

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References in periodicals archive ?
A "First National" case illustrates the difficulty of proving likelihood of confusion, even when an inherently weak mark has been supported by a showing of secondary meaning.
18) is rendered as "thrustings," when it clearly means "positions," with a possible secondary meaning of "making (sexual) music.
17) In contrast, a New York district court ruled that the plaintiff's registration for the "L'AIR DU TEMPS" mark did not protect the "L'AIR" component without a showing of secondary meaning for the "L'AIR" component because the "L'AIR" component was not promoted separately from the entire mark.
The dictionary gives an alternative spelling gennel, which may be derived from, or have some connection with, a secondary meaning of kennel: a street gutter.
8) Instead, distinctiveness now requires proving that the trade dress has acquired secondary meaning, defined as a connection in consumers' minds between the product and its manufacturer.
Since a trade dress claim for artwork would obviously deal with the product itself and not the packaging, a plaintiff would need to prove that the work of art has acquired a secondary meaning.
63) For example, the Supreme Court held that the term "Nu-Enamel," although descriptive of enamel paints, had attained a secondary meaning because it had come to be associated with a particular company's brand of paint.
To begin with, there is the secondary meaning of the word "agency," generally subsumed in the scholarship on slavery into the dominant meaning described above, which speaks of "agency" as an "instrumentality" of another's purpose.
A descriptive trademark in continuous use without adverse adjudication of rights for five years is generally presumed to have acquired secondary meaning and may then enter the Principal Register.
Acquiring distinctiveness through secondary meaning is more difficult to prove and requires a concerted effort on the company's part to associate a product with its unique trade dress.
com may result in many hits to the Web site but would not be entitled to federal trademark registration on the Principal Register, unless the company could show a secondary meaning for those words.

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